| Originally posted by : Ashley |
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Lot of companies register their designs under Design Act, would like to know that in case of containers, bottles etc, are the companies areigstereing the designs mentioning the specific sizes, cuves, etc. for eg. if a bottle with a neck of 21mm registered with specific design is registered will it provide protection to a bottle with similar design with neck size of 45 mm or any size other than 21 mm.
Since we get certificate of designs registered where in also photographs are affixed and no specific sizes are mentioend only designs are shown in the exhibits. |
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Principals followed by the Courts in deciding infringement of the registered design
HIGH COURT OF CALCUTTA
Suit No. 415 of 1993
Ordinary Original Civil Jurisdiction
Castrol India Ltd...............Petitioner
Versus
Tide Water Oil Co. (I) Ltd................Respondents
Ruma Pal, J.
Decided on : August 26, 1994
•The sequence of the obligation of the court in considering an application for infringement of a design is first to consider whether protection is claimed in respect of a design or of the mode of manufacture. The first is protected by the Design Act 1911 and the second by the law of patents. A design protects an idea embodied in a particular form while a patent protects the idea itself (See : Philips vs. Harbio Rubber Company (1920) 34 RPC 233).
2.The court is then to consider whether the design is in fact novel and if so to what extent. This follows from section 43 of the Act under which the registration under the Act can be made of a new or original designs not previously published in India.
3. But all novel designs are not protected. Novel designs which are purely functional cannot found an action for infringement (see : In re : Lamson Industries Ltd.'s Application (1978) RPC 1). The object of the Designs Act is to protect shape but not a functional shape and if shape and configuration are dictated solely by function it is not registrable as a design. The decision in the case of Amp. Inc. vs. Utilux Pty. Ltd: 1972 RPC 103, of the house of Lords related to the manufacture of electric terminals.
Lord Reid J. said :
"... and the words `judged solely by the eye' must be intended to exclude cases where a customer might choose an article of that shape not because he thought that the shape made it more useful to him."
4. The next question is whether there is sufficient resemblance between the allegedly infringing copy and the petitioner's registered design to found an action for infringement under section 53 of the Act. It is not every resemblance in respect of the same article which would be actionable at the instance of the registered proprietor of the design. The copy must be a fraudulent or obvious imitation. The word `imitation' dose not mean `duplication' in the sense that the copy complained of need not be an exact replica. The word has been judicially considered but not defined with any degree of certainty. In Best Product Ltd. (supra) it was said in deciding the issue of infringement, it was necessary to break the article down into integers for descripttive purposes but in the ultimate result it is the article as a totality that must be compared and contrasted with the features of a shape and configuration shown in the totality observable from the representation of the design as registered. It was said that the Court must address its mind as to whether the design adopted by the defendants was substantially different from the design which was registered.
5. Apart from such overall resemblance in the design, the authorities have held that the Court is required to see in particular as to whether the essential part or the bases of the petitioner's claim for novelty forms part of the allegedly infringing copy. In Best Products Ltd. vs. F.W. Woolworth & Company Ltd. (supra) the essential part of the registered design of a whistling kettle was found by the Court to be the shape of the spout and the cap applied to it. The Court said that the very form of the registration emphasised that it was in respect of the audible alarm characteristic that the application of the plaintiff's registered design found its intended exploitation. The audible alarm, according to the learned Judge necessarily assumed a primary significance. The difference between the audible alarm of the plaintiff's kettle and that of the defendant's kettle as being marked, the action for infringement was dismissed (see: also in the context Phillips vs. Harbro Rubber Company (1920) 34 RPC 233 and Dunlop Rubber Co. Ltd. vs Golf Ball Developments Ltd. (1931) 48 RPC 268, 281.
6. The next task of the Court is to judge the similarity or difference through the eye alone and where the article in respect of which the design is applied is itself the object of purchase, through the eye of the purchaser. Thus in the case of Benchairs Ltd. vs. Chair Center Ltd. 1974 RPC 429 where the article to which registered design was applied was a chair. Russel L. J. said :
"As we see it, our task is to look at these two chairs, to observe their similarities and differences, to see them together and separately, and to bear in mind that in the end the question whether or not the design of the defendant's chair is substantially different from that of the plaintiff is to be answered by consideration of the respective design as a whole : and apparently, though we do not think it affects our present decision, viewed as though through the eyes of a consumer or customer."
6. In judging the articles solely by the eye the Court must see whether the defendant's version is an obvious or a fraudulent imitation.
7. In Dunlop Rubber Co. Ltd. vs. Golf Ball Developments Ltd (1931) XLVIII RPC 268 at 279, the meaning of the word `obvious' and `fraudulent' have been stated
"... `obvious' means something which, as soon as you look at it, strikes one at once as being so like the original design, the registered design , as to be almost unmistakable. I think an obvious imitation is something which is very close to the original design, the resemblance to the original design being immediately apparent to the eye looking at the two."
In a later portion of the judgment it was said :
"...fraudulent imitation seems to me to be an imitation which is based upon, and deliberately based upon, the registered design and is an imitation which may be less apparent than an obvious imitation; that is to say , you may have a more subtle distinction between the registered design and a fraudulent imitation and yet the fraudulent imitation, although it is different in some respects from the original, and in respects which render it not obviously an imitation may yet be an imitation, imitation perceptible when the two designs are closely scanned and accordingly an infringement."
Summit Aggarwal.
CAclubindia
